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What Is A Trade Mark Opposition?

Once the UK Intellectual Property Office (UKIPO) has completed it’s examination of a trade mark application, the proposed registration is published in the on-line Trade Marks Journal. From this point there is an initial two month period during which a third party can file an opposition to the registration.

An opposition can be based on one of two grounds:

  • Absolute grounds – This is where the trade mark itself is unsuitable for registration. Most often this occurs when the opponent notices that the trade mark is descriptive of the goods or services offered or that the trade mark is a generic term for those goods or services and therefore should be available for anybody in the same sector to use.
  • Relative grounds – An opposition on relative grounds is where a trade mark registration is deemed by the opposition to conflict with a previously registered mark or right (even an unregistered one) owned by the opposing party.

An opposition may also be filed against the entirety of the application or only against specific goods and services covered by the application.

It is possible before going ahead with a full trade mark opposition for the opponent to issue a ‘Notice of Threatened Opposition’. This informs the applicant that a formal opposition may be filed should the applicant proceed with their trade mark registration. This gives the applicant the opportunity to reach out to the opponent to see if there is a way both parties can negotiate a compromise without needing to resort to legal action. A Notice of Threatened Opposition also extends the opposition period to three months.

From here both parties may negotiate amendments to the application such as altering the designated class of goods or services or withdrawing the contested part of the application entirely. Should this be unsuccessful the opponent can file a ‘TM7 Notice of opposition and statement of ground’ and proceed with an official trade mark opposition.

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Client Testimonial

“We’ve been using BRIFFA as our trade mark agent for UK and Europe ever since we started selling on Amazon UK and in the other EU countries. We’re very happy with BRIFFA’s service and professional support.

William has been an excellent trade marks advisor and has assisted us throughout the process, from the initial searches for a potential opposition to the final release of our trade mark document. The process has been seamless and is always a pleasure to work with him and his Team. We never had any issues with our trade marks and would be our pleasure to recommend their services to anyone wishing to register their UK and European trade marks..”

– e-Luxury Online, Trade Mark Services Client

How Can We Help?

Defending Your Application

Once your trade mark application has successfully passed UKIPO examination it is published in the on-line Trade Marks Journal and is open for anybody to file an opposition or notice of threatened opposition.

If you happen to receive either of these our highly experienced team are able to guide you through the steps required to respond quickly and effectively to defend your application.

This process can have many steps should it go all the way to a tribunal and then potential appeals, therefore the sooner you seek professional help in this process the greater your chance of successfully defending your trade mark application.

Whether this means minimal negotiation to prevent an opposition from being filed or the effective submission of witness statements and evidence leading to a favourable judgment in a tribunal, our solicitors are experienced in opposition proceedings and can get started on your case by booking a free consultation.

Initiating A Trade Mark Opposition

Your trade mark is important for keeping your brand safe, it is often the mark of quality your customers look out for when making a purchasing decision, therefore it is important that no other trade marks are registered which may cause confusion and damage your reputation.

We can keep an eye out for trade mark applications that could damage your brand, assessing the similarity of applications to your own mark as well as the class of goods or services the applicant is servicing.

If an application appears to be infringing on your trade mark we can provide assistance and advice on what your next steps should be. We can help you submit a notice of threatened opposition, facilitate negotiations and prepare for the submission of an official trade mark opposition.

If you’ve already begun opposition proceedings and find yourself in need of further support as the case progresses, we are able to oversee your case and keep your brand protected.

Why choose Briffa?

We have helped businesses successfully defend and lodge opposition claims since since 1995
We offer a free consultation to discuss your brand protection needs before any fixed fee quotes are given
We have offices in the UK, the Republic of Ireland and Malta
We offer an industry leading service with short turnaround times and business-focused advice

Frequently Asked Questions

Trade Mark Case Study

Often, it requires some creative thinking for a business to get around a trade mark problem. One of our clients wanted to secure a logo mark, but found there was already a mark on the register that would block their mark from being successfully registered.

Sometimes, it’s possible to enter into a co-existence agreement with the owner of the blocking mark, so each side knows how the other will develop their business and avoid overlapping one another. However, in situations like our client’s case, the blocking mark was so close to our client’s mark that a co-existence agreement simply was not possible.

To resolve the issue, we searched for similar marks predating the blocking mark. We were looking for any mark similar to our client’s intended mark, but owned by an individual or company that may consider selling to our client.

We eventually found a mark fitting the bill and approached the owner. We agreed on a deal suitable to both sides, and the owner even handed over the domain name associated with the mark as an extra.

With a creative, outside-the-box approach to solving the problem, our client was able to secure a trade mark they were happy with.

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Meet some of our specialist lawyers who can assess your case and advise on the best solution for you.

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For a FREE, no-obligation quote just fill in the form below and someone from our team will be in touch within one working day to discuss your requirements.
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What Our Clients Say

Briffa has served hundreds of satisfied clients across a broad range of sectors since our creation in 1995. We’re proud to be leading intellectual property solicitors, but don’t just take our word for it
— here’s what our clients have to say.

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